Appeal No. 2004-1334
Application 09/526,457
components, such as the “structural fire resistant, sound absorbent foam” in space 25, which
space is used for “routing all of the electrical . . . services throughout modular unit 10” in the
units of Fortune (col. 3, lines 54-58). See, e.g., Vehicular Technologies Corp. v. Titan Wheel
Int’l Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000).
The sole claim limitation of appealed claim 14 that is at the center of the dispute is
“means for protecting said means for supplying electricity to said self contained room” which is
further limited by the claim language “said means for protecting said means for supplying
electricity being positioned within said space,” and particularly by the claim language “wherein
said means for protecting said means for supplying electricity is a gel.” We find that in this
claim language, the term “gel” supplies sufficient structure to remove the language from the
requirements of § 112, sixth paragraph. We further find that, in this respect, the “gel” can be any
gel that imparts fire protection to the means for supplying electricity, and is not limited to the
particular gel disclosed at page 5, lines 1-3, of the specification, because there is no basis in the
claim language or in the specification to read such limitation into claim 14.
The examiner finds that Fortune discloses that electrical service is positioned in space 25
between inner wall 23 and outer wall 24, and is protected by foam, and that Mallow discloses a
gel that will protect electrical components in the event of a fire (Paper No. 10, pages 2-3; answer,
page 3). See Fortune, e.g., col. 3, line 46, to col. 4, line 14, and Fortune FIG. 2; Mallow, e.g.,
col. 3, line 60, to col. 4, line 5, cols. 6-7 and FIGs. 1 and 2. On this basis, the examiner
concludes that it would have been prima facie obvious to one of ordinary skill in this art to
protect the electrical utilities within the walls of Fortune with the gel of Mallow.
With respect to appealed claims 8 and 9, wherein the former requires that the walls
contain multiple layers and the latter requires that several of the layers are “metal,” the examiner
finds that the use of multiple layers and metal layers, prima facie, would have been within the
ordinary skill in this art because only duplication of materials is involved (Paper No. 10, page 3;
answer, pages 3-4).
Accordingly, since a prima facie case of obviousness has been established by the
examiner over the combined teachings of Fortune and Mallow, we have again evaluated all of
the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellant’s arguments in the brief. See generally, In re Oetiker,
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